SCOTUS Refuses To Hear Case Between Jack Daniels And VIP Products Over Doggy Chew Toy

from the heel! dept

The trademark dispute between Jack Daniels, famed maker of brown liquor, and VIP Products, maker of less famous doggy chew toy Bad Spaniels, has been a long and winding road. If you aren't familiar with the case, the timeline goes like this. VIP made a dog toy that is a clear parody homage to a bottle of Jack Daniels whiskey, called Bad Spaniels (get it?). Jack Daniels sent a C&D letter to VIP, claiming trademark infringement. VIP turned around and sued Jack Daniels for declaratory judgement that its product did not infringe, leading Jack Daniels to then file its own trademark lawsuit in response. The initial court ruling found for Jack Daniels, rather bizarrely claiming that VIP's product couldn't be expressive work, thereby protected by the First Amendment, because it wasn't a form of traditional entertainment. On appeal, however, the U.S. Court of Appeals for the 9th Circuit said that ruling was made in error, vacated it, and instructed the lower court to apply the Rogers test since the product was clear parody and expressive after all. Rather than have that fight, though, Jack Daniels instead petitioned the Supreme Court to hear its case.

While I might find it interesting to see just how many doggy-related puns several SCOTUS Justices might fit into opinions on this case, however, we now have the news that the court has declined to hear the case.

As reported by Law360, the justices denied the petition filed by Jack Daniel’s last year that said the Ninth Circuit had been “egregiously misguided” when it afforded said protection to the toy, which looks like the famous whiskey but replaces the text on the label with puns.

The justices didn’t explain why they denied the petition, but it is not hugely surprising as the courts only grant a small fraction of the petitions it receives.

So, this isn't SCOTUS saying Jack Daniels is wrong, but it does mean that the only place it is going to have this fight is the lower court that has already been instructed on appeal to apply the Rogers test. That means that Jack Daniels is now going to have to show that the use of any JD marks by VIP products is both "not artistically relevant to the underlying work" and that it "explicitly misleads consumers as to the source of the content of the work."

And if you really think that Jack Daniels is going to be able to show that either of those are the case when it comes to a pet toy overflowing not with whiskey but with puppy puns, you may need to get your head checked. Certainly, it sounds like VIP is more than happy to have that particular fight.

In a statement to Law360, an attorney for VIP Products said the justices had made the right decision.

“The Ninth Circuit followed settled precedent, which strikes the right balance to protect expressive speech,” said David G. Bray of Dickinson Wright PLLC. We look forward to bringing this litigation to conclusion in the district court.”

Or Jack Daniels can realize its mistake and try to settle this whole mess it made. Look what you did, Jack Daniels! Look what you did! Bad corporate bully. Bad!

Filed Under: bad spaniels, chew toys, supreme court, trademark
Companies: jack daniels, vip products

Jack Daniels Gets Chewed Up In Trademark Case Over 'Bad Spaniels' Doggy Chew Toy

from the that's-ruff dept

We've seen roughly a zillion trademark disputes and cases in the alcohol industries, but perhaps nothing quite like this. Jack Daniels, the famous liquor company, found itself in a prolonged court battle with VIP Products LLC. At issue? Well, VIP makes a doggy chew toy that is a parody of Jack Daniels' famous whiskey bottle and trade dress. See for yourself.

So, while the toy isn't exactly similar to the Jack Daniels bottle, it's a clear homage or parody of it. Parody, of course, has space carved out for it by the First Amendment. While trademark law might lead one to see a problem here, it's the fact that even this commercial product is expressive parody that keeps it from being trademark infringement.

The Jack Daniels folks didn't agree. The company issued VIP a cease and desist notice, claiming trademark infringement. In response, VIP sued for declaratory judgement that its product was not infringing by asserting First Amendment protections. Jack Daniels then countersued for trademark infringement. While a district court ruled for Jack Daniels, arguing essentially that VIP's dog toy was not an expressive work because it wasn't a book, movie, or song, the U.S. Court of Appeals for the 9th District vacated that ruling and stated that further proceedings would need to determine if Jack Daniels can demonstrate that it can apply the Rogers test for VIP's chew toy.

On appeal, the Ninth Circuit held that the district court erred in finding that the Bad Spaniels toy was not an expressive work. The court explained that “[a] work need not be the expressive equal of Anna Karenina or Citizen Kane” to be considered expressive; nor is a work “rendered non-expressive simply because it sold commercially.”  VIP Prods., No. 18-16012, at 10 (citations and quotation marks omitted). The court observed that it recently had “little difficulty” concluding that greeting cards containing trademarked phrases were expressive works entitled to First Amendment protection, even though they did not show great “creative artistry.”  Id. (quoting Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018)). Although, the court acknowledged, the Bad Spaniels toy “surely [is] not the equivalent of the Mona Lisa,” it is nevertheless an expressive work.  Id.

Accordingly, the court held that, as a threshold matter, the Rogers test needed to be applied. Under that test, a trademark infringement plaintiff must show that the defendant’s use of the mark either (1) is “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the source or content of the work.”  Id. at 9 (quoting Gordon, 909 F.3d at 265). The Ninth Circuit vacated the district court’s finding of infringement and remanded for a determination, in the first instance, of whether Jack Daniel’s can satisfy either element of the Rogers test.

It seems damn near impossible to imagine any scenario in which Jack Daniels manages to satisfy the Rogers test. And the real question is why it felt any of this expensive litigious adventurism was necessary in the first place. How about just having a glass of whiskey and enjoying the homage?

Filed Under: 1st amendment, bad spaniels, chew toys, dog toys, expression, free speech, whisky
Companies: jack daniels, vip products